2 Michael DePonte, Shareholder and Litigation Manager – Austin, Jackson Lewis P.C. Who is the Client? Ethical Guidelines for In-House Lawyers
3 Attorney’s work is advisory and ongoing – sometimes difficult to pinpoint when need for Company representation and protection begins Relationship with officers and employees begins, and advice is given, before act of wrong-doing occurs Attorney can influence future Company behavior Lines may be blurred between business actor and legal advisor when events occur Obligation to explain that Company holds the attorney-client privilege, controls decision to retain or waive Key Considerations for In-House Counsel
4 Corporation is entitled to same protection of confidentiality as an individual client under the attorney-client privilege Difficulty in applying privilege in corporate context stems from inanimate nature of corporation: –corporation can “speak” to attorney only via its agents –lawyer represents corporation not individual agents Application of attorney-client privilege often turns on which corporate officials and employees act on behalf of the corporate entity as a client What Do You Mean Who is the Client?
6 Protects disclosure of contents of communications between an attorney and an attorney’s client Applies only to private client communications Communications must be for purposes of securing legal advice Privilege has been claimed and not waived by client Determining when an attorney-client relationship is created informs the analysis of privilege in the corporate context Attorney-Client Privilege
7 Confidential information includes both privileged and unprivileged client information Unprivileged client information is: –all information relating to a client or furnished by the client –other than privileged information –acquired by the lawyer during the course of or by reason of the representation of the client Duty of Confidentiality
8 Tex. Disciplinary R. of Professional Conduct 1.05 – Confidentiality of Information A lawyer shall not knowingly: 1.Reveal confidential information of a client or a former client to: i.A person that the client has instructed is not to receive the information; or ii.Anyone else, other than the client, the client’s representatives, or the members, associates, or employees of the lawyer’s firm 2.Use [such information] to the disadvantage of the client unless the client consents after consultations. 3.Use [such information] to the disadvantage of the former client after the representation is concluded unless the former client consents after consultation or the confidential information has become generally known. 4.Use of privileged information of a client for the advantage of the lawyer or of a third person, unless the client consents after consultation. Duty of Confidentiality
9 A lawyer may reveal confidential information: 1.When expressly authorized in order to carry out the representation. 2.When client consents after consultation. 3.To the client, the client’s representatives, or the members, associates, and employees of the lawyer’s firm, except when otherwise instructed by the client. 4.When the lawyer has reason to believe it is necessary to comply with a court order, a Texas Disciplinary Rule of Professional Conduct, or other law. 5.To the extent reasonably necessary to enforce a claim or establish a defense on behalf of the lawyer in a controversy between the lawyer and the client. 6.To establish a defense to a criminal charge, civil claim or disciplinary complaint against the lawyer or his associates based on conduct involving client or representation of client. 7.When the lawyer has reason to believe it is necessary to prevent the client from committing a criminal or fraudulent act. 8.To the extent revelation reasonably appears necessary to rectify the consequences of a client’s criminal or fraudulent act committed where the lawyer’s services had been used. Duty of Confidentiality See, Tex. Disciplinary R. of Prof’l Conduct 1.05 – Confidentiality of Information
10 Keeps a copy of the Texas Disciplinary Rules of Professional Conduct on his desk Presents regularly on ethics at SBOT seminars Sends monthly emails to his colleagues of the latest ethics updates from the Texas Center for Ethics Meet Jack Lewis - The Ethical In-House Lawyer
11 Texas Disciplinary Rules of Professional Conduct ABA Model Rules of Professional Conduct Where Can Jack Obtain More Information? –Texas Center for Legal Ethics: a 501(c)(3) public foundation organized for the purposes of promoting and enhancing ethics, professionalism and civility among the state’s lawyers” www.legalethicstexas.comwww.legalethicstexas.com –The American Bar Association: www.abanet.orgwww.abanet.org –State Bar of Texas ethics helpline: 1-800-532-3947 Which Ethical Rules Apply to Jack Lewis in Representing ABC, Inc.?
12 Jack Lewis is hired as in-house counsel for Company A. Company A and Company B are considering merging to form ABC, Inc. Company A’s CEO tells Jack Lewis that he will become the CEO of ABC, Inc., and that upon completion of the merger, Jack Lewis will be employed as in-house counsel for ABC, Inc. Attorney for Company B tells Jack Lewis that the Company B’s CEO has secret plans to fire Company A’s CEO and his entire senior management – they will have no place at ABC, Inc. But the attorney tells Jack Lewis not to worry – he will still have his job as in-house counsel. Who is Jack Lewis’ Client? Any concerns here? WWJD (What Would Jack Do?)
13 The merger is complete and ABC, Inc. is up and running. One day Jack Lewis receives notice that a claim has been filed against ABC, Inc. The claim is insured. One of the officers of ABC, Inc., strongly advises Jack that he wants to defend the claim all the way to trial. He specifically tells Jack, “Do NOT settle, it’s a matter of principle!” Jack speaks to ABC, Inc.’s insurer and learns that the insurer wants to settle and settle quickly. Who is Jack Lewis’ Client? Any concerns here? WWJD (What Would Jack Do?)
14 ABC, Inc. is now the parent company of subsidiary XYZ, Inc. For as long as Jack Lewis has been employed as in-house counsel at ABC, Inc., subsidiary XYZ, Inc. has shared in ABC Inc.’s goal of becoming the world’s leading eco-friendly company. Three years after the formation of XYZ, Inc., Jack learns that the subsidiary has plans to launch a new product that directly contravenes ABC Inc.’s mission. Who is Jack Lewis’ Client? Any concerns here? WWJD (What Would Jack Do?)
15 To Whom Does He Owe Allegiance? ABC, Inc. “Officers, directors, employees, and shareholders are the constituents of the corporate organizational client.” See Model Rules of Professional Conduct R. 1.13(a) cmt. 1 Constituents
16 It Depends… ….Unlike individual clients who can speak and decide finally and authoritatively for themselves, an organization can speak and decide only through its agents or constituents such as its officers or employees … who act as an intermediary between the organizational client and the lawyer. This fact requires the lawyer under certain conditions to be concerned whether the intermediary legitimately represents the organizational client. Tex. Disciplinary R. of Prof’l Conduct, R. 1.12 cmt. 1 What Do You Mean “Who is the Client?”
17 One day ABC’s Compliance Officer, Ima Duwrong, comes to Jack Lewis’s office, closes the door, and says, “I want to confide in you. You’ve been such a great advisor to me in the past…. “I’ve been taking money from ABC, Inc. for years and no one knows. Obviously, I couldn’t afford that Bentley on my meager salary! But I’m getting ready to secretly repay the money because I’ve recently come into an inheritance!” What is Jack Lewis’ course of action? WWJD (What Would Jack Do?)
18 A.Place Ima under citizen’s arrest and hold her until the police arrive. B.Softly tell Ima to “never speak of this again.” C.Ask Ima for a piece of the pie. D.Inform Ima that he does not represent her and explain that he is going to report the matter. WWJD (What Would Jack Do?) POSSIBLE ANSWERS:
19 A.Place Ima under citizen’s arrest and hold her until the police arrive. B.Softly tell Ima to “never speak of this again.” C.Ask Ima for a piece of the pie. D.Inform Ima that he does not represent her and explain that he is going to report the matter. WWJD (What Would Jack Do?) POSSIBLE ANSWERS:
20 Rule 1.12: ORGANIZATION AS A CLIENT Texas Disciplinary Rules of Professional Conduct (a)A lawyer employed or retained by an organization represents the entity. While the lawyer in the ordinary course of working relationships may report to, and accept direction from, an entity’s duly authorized constituents, [in the situations described in paragraph (b)] the lawyer shall proceed as reasonably necessary in the best interest of the organization without involving unreasonable risks -- of disrupting the organization and -- of revealing information relating to the representation to persons outside the organization.
21 Rule 1.12: ORGANIZATION AS A CLIENT Texas Disciplinary Rules of Professional Conduct (b) A lawyer representing an organization must take reasonable remedial actions whenever the lawyer learns or knows that: 1)an officer, employee, or other person associated with the organization has committed or intends to commit a violation of a legal obligation to the organization or a violation of law which reasonably might be imputed to the organization; and 2)the violation is likely to result in substantial injury to the organization; and 3)the violation is related to a matter within the scope of the lawyer’s representation of the organization.
22 Ima Duwrong insists that Jack keep her misdeeds quiet and allow her to “secretly” repay because she was the one who stuck her neck out to get Jack hired, and she sees Jack as “[her] lawyer” – Jack has advised Ima through numerous sticky situations, and Ima has confided in him before about personal issues, such as a recent divorce, usually during many long visits to the printers while awaiting materials for filing. Ima insists she obviously came Jack for his legal advice on how to best secretly repay the funds based on her past experience with and trust in him. What should Jack Lewis do now? WWJD (What Would Jack Do?)
23 POSSIBLE ANSWERS: A. Now Jack can place Ima under citizen’s arrest, call the police. B.Give Ima a 48-hour head start to leave the country before Jack does anything. C.Remind Ima that when they discussed her divorce, he was speaking with her as a concerned friend. Remind Ima that she was represented by an attorney in the divorce and that he told Ima he knew nothing about family law. Restate that Ima was/is not his client, and he will report the matter to his client, ABC Inc. D.Call his old law firm and ask if they are hiring. WWJD (What Would Jack Do?)
24 POSSIBLE ANSWERS: A. Now Jack can place Ima under citizen’s arrest, call the police. B.Give Ima a 48-hour head start to leave the country before Jack does anything. C.Remind Ima that when they discussed her divorce, he was speaking with her as a concerned friend. Remind Ima that she was represented by an attorney in the divorce and that he told Ima he knew nothing about family law. Restate that Ima was/is not his client, and he will report the matter to his client, ABC Inc. D.Call his old law firm and ask if they are hiring. WWJD (What Would Jack Do?)
25 Follow Up: The CEO says to Jack, “Thanks, I will talk to Ima Duwrong, but we don’t need any more bad press – if you know what is good for you, you will forget you ever heard about this.” What should Jack Lewis do now? What If the CEO Does Nothing?
26 (c) Except where prior disclosure to persons outside the organization is required by law or other Rules, a lawyer shall first attempt to resolve a violation by taking measures within the organization. In determining the internal procedures, actions or measures that are reasonably necessary in order to comply with paragraphs (a) and (b), a lawyer shall give due consideration to: (1)the seriousness of the violation and its consequences, (2)the scope and nature of the lawyer’s representation, (3)the responsibility in the organization and apparent motivation of the person involved, (4)The policies of the organization concerning such matters, and (5)Any other relevant considerations. Rule 1.12: ORGANIZATION AS A CLIENT Texas Disciplinary Rules of Professional Conduct
27 (c) ….Such procedures, actions and measures may include, but are not limited to, the following: (1)Asking reconsideration of the matter; (2)Advising that a separate legal opinion on the matter be sought for presentation to appropriate authority in the organization; and (3)Referring the matter to higher authority in the organization, including, if warranted by the seriousness of the matter, referral to the highest authority that can act on behalf of the organization as determined by applicable law. Rule 1.12: ORGANIZATION AS A CLIENT Texas Disciplinary Rules of Professional Conduct
28 Refer matter to board of directors (or similar governing body) If unsuccessful, assess difficult issue of revealing confidential information to persons outside the organization Provisions of Rule 1.02 (Scope and Objectives of Representation) and Rule 1.05 (Confidentiality of Information) must be met in order to reveal confidential information to 3d party Tex. Disciplinary R. of Prof’l Conduct 1.05, 1.02, 1.12 cmt. 7 Should Jack Lewis Report Up the Ladder or Beyond?
29 Optional Withdrawal –Lawyer may withdraw if no material adverse effects on client’s interests –Lawyer may withdraw if client persists in course of action lawyer reasonably believes is criminal or fraudulent Tex. Disciplinary R. of Prof’l Conduct 1.15 cmt. 7 Mandatory Withdrawal –Lawyer must resign when lawyer knows the employment will result in violation of rule of professional conduct or other law Withdrawal not permitted simply because client suggests such course of conduct (client may make suggestion with hope lawyer will not be constrained by a professional obligation) Tex. Disciplinary R. of Prof’l Conduct 1.15 cmt. 2 Should Jack Lewis Withdraw?
30 Sarbanes-Oxley Act: subjects attorneys to ethical standard in the representation of certain public companies: –Counsel who “appear and practice“ before SEC must report material violation of securities law or breach of fiduciary duty by company to chief legal counsel or chief executive officer; –If chief counsel or executive officer fails to appropriately respond, attorney must report to Board of Directors; and –If no appropriate action is taken, Counsel “may” report to the SEC: -- information which counsel “believes necessary” to prevent company from committing a violation likely to cause substantial financial harm to issuer or investors, or -- to prevent issuer from committing criminal act, or -- to rectify material violation that caused substantial financial harm to the issuer or investors. Sarbanes-Oxley Act § 307; 17 CFR Part 205 (“up the ladder rule”) Don’t Forget SOX!
31 Follow Up: The Board of Directors says to Jack, “Thanks for letting us know; please investigate Ima Duwrong and make recommendations to the Special Audit Committee of the Board as to our next steps.” What should Jack Lewis do now? WWJD (What Would Jack Do?)
32 Follow Up: In connection with his investigation, Jack Lewis sets up an interview of Ima Duwrong to get the details. As the interview begins, Ima immediately asks Jack: “Am I in trouble, Jack? Do I need a lawyer?” What should Jack Lewis do now? WWJD (What Would Jack Do?)
33 Which Hat Are You Wearing? L AWYER I NVESTIGATOR B OSS F RIEND C OMPLIANCE O FFICER
34 In-house counsel often blend role of business advisor, corporate employee, and lawyer (legal and non-legal roles) –Risk that communications with in-house lawyer may not be protected under attorney-client privilege To be privileged – must be shown that communication was for the purpose of providing legal services rather than general business advice Courts have difficulty distinguishing legal and business advice, no bright-line test but case-by-case scenario –Courts may protect only those parts of communication that are identifiable as legal; may not protect communications in which in-house counsel is not acting primarily in his or her position as legal advisor Providing Business Advice
35 In re Sealed Case, 737 F.2d 94,99 (D.C. Cir. 1984), the court set the issue as follows: The lawyer whose testimony the government seeks in this case served as in-house counsel. That status alone does not dilute the privilege. We are mindful, however, the attorney was a company vice-president, and that certain responsibilities were outside the lawyer’s sphere. The company can shelter the attorney’s advice only upon a clear showing that the lawyer gave it in a professional, legal capacity. Providing Business Advice
36 Which hat are you wearing and who is the client? What is the objective of the investigation? –Is it anticipated that the investigation results may become public? –May be necessary to a defense in court? What best practices apply to interviews of corporate employees while conducting internal investigations on behalf of the Company? –Are investigations driven by objective principles? –Is attorney-client privilege protected? –Still bound by confidentiality rules. Internal Workplace Investigations
37 The Upjohn Factors: “[C]ommunications…to counsel for corporation acting as such, at direction of corporate superiors…to secure legal advice…,[with awareness by employees] that they were being questioned so that corporation could obtain advice, …were protected.” Was the information: −necessary for the attorney to impart legal advice? −available from someone in the “control group”? −within the employees’ scope of corporate duties? −made with knowledge by employees that purpose of counsel is to provide legal advice to the Company? −communicated as confidential and thereafter kept confidential? When Does Privilege Attach? Upjohn Factors
38 Warnings should inform constituent that the investigating attorney is representing Company and not the constituent. Warnings should be explicit and unambiguous to ensure constituent does not believe that an attorney-client relationship has been formed with the investigating attorney. Purpose of interview should be made clear so it is apparent that counsel is acting on behalf of Company and gathering information to provide legal advice to the corporation. Recommended Steps for Interviewing Constituents
39 Give constituent opportunity to ask questions about the Upjohn warning and counsel’s role Inform constituent that: –interview is subject to the attorney-client privilege and regarded as confidential –the privilege belongs to the Company, not the constituent –the Company alone may decide if or when the interview content should be disclosed to third parties Recommended Steps for Interviewing Constituents
40 Who’s There? Agency Investigations: The “BIG KNOCK” at Your Door
41 KEY QUESTIONS: What should the scope of the investigation be? Who in the enterprise controls the investigation? Who should conduct the investigation? How should the investigation be conducted? What will be done with the results?
42 Identify “agents” who have capacity to speak for the corporate client—and communicate this to the Agency representative; Disclose your role as in-house counsel to agents and any employee witnesses and clarify your role; Determine the Company position on the parameters of privilege with respect to any prior in-house investigation(s); and Advise client as to strategies for response to Agency action/subpoenas/ reports, etc. Ethical Duties During Agency Investigations
43 Attorney-client privilege may be expressly waived, or found not to exist, by: –Voluntary disclosure of the information or documents to a person other than the client who has no interest in maintaining the confidentiality – Disclosure by revealing privileged information (during trial or deposition testimony, in court or administrative filings) –Disclosure to 3rd parties or others not essential to the representation (insurance brokers, public relations specialists) –Failing to timely assert privilege when confidential information is sought through the discovery process or otherwise Waiver of Privilege
44 Designate Legal Advice –Clarify legal versus business communications –Phrases: “from a legal perspective” or “the legal conclusion is” –Sensitive communications should be restricted to senior management Separate Legal Role from Business Role –Cleary communicate role –If Company places in-house counsel in role of officer or director, Company should retain independent attorney in the event sensitive issues arise –When occupying dual roles, document nature of in-house counsel’s communications with corporate officers, employees, directors or agents Protecting Privilege and Avoiding Pitfalls
45 Avoid accidental or shared privilege –Keep all legal files separate from general corporate files, to avoid accidental disclosure –Establish policies to protect the confidentiality of legal documents and clearly mark such documents as “legal” –Limit the distribution of certain communications to a need-to-know basis Protecting Privilege and Avoiding Pitfalls
46 Define what activities are “lawyering” versus “business” activities Key: done in preparation to defend client(s) in anticipated litigation? Segregate attorney/client communication documents and attorney work product and clearly mark same (maintain documentation of elements of “work product”) Points to Remember
47 Identify reporting “ladder” channels BEFORE there is an incident—i.e., agree on who receives “bad news” for the Company and who will act at the behest of counsel Avoid conducting internal investigations, unless litigation or Agency Investigation arising from incident has already commenced or been threatened, or attorney believes there is substantial likelihood litigation will commence –Necessary for work-product doctrine to apply Points to Remember
48 Who are you? Who? Who? We really want to know! Think before you speak and act. And Finally….
50 Joe Knight, Partner Baker Botts LLP Handicapping the Appellate Season
51 2012-2013 Statistics United States Court 39/78 in May and June Texas Supreme Court 38/78 in June and August
52 Pending Texas Supreme Court Cases In re John Doe A/K/A "Trooper" 13-0073; argued 11/07/13 Can a company compel Google to reveal the identity of an anonymous blogger who is disparaging the company's business? How much of a showing of disparagement must a company make to defeat anonymity? Must a court have personal jurisdiction over the blogger before deciding his right to anonymity?
53 Pending Texas Supreme Court Cases Kinney v. Barnes & Burbage v. Burbage 13-0043 & 12-0563; argued 01/09/14 If a statement is adjudged defamatory, can a court mandate removal of the statements from the Internet and enjoin repetition? Does such restraint violate the Texas constitution? "Every person is at liberty to speak, being responsible for the abuse of this right."
54 Pending Texas Supreme Court Cases Americo Life v. Meyer 12-0739; argued 11/06/13 Should an arbitration award be vacated because a party was deprived of its right to appoint a non- neutral arbitrator? When a contract specifies arbitrator qualifications, does it preclude additional qualifications in the AAA rules? If so, what is the remedy?
55 Pending Texas Supreme Court Cases Exxon Mobil v. Drennen 12-0621; argued 11/06/13 Should Texas courts honor a contractual choice of law clause and enforce forfeiture conditions on restrictive stock? Do the forfeiture conditions constitute an unenforceable restrictive covenant?
56 Pending U.S. Supreme Court Cases Halliburton v. Erica P. John Fund 13-317; argued 03/05/14 What is the future of class-action securities fraud cases? Should the Court overrule the presumption of class- wide reliance based on the fraud-on-the-market theory? If not, should a defendant be able to defeat class certification by showing that the alleged misrepresentation did not affect the stock price?
57 Pending U.S. Supreme Court Cases Alice Corp. v. CLS Bank 13-298; argued 03/31/14 To what extent are computer-implemented inventions patentable? Can the Court articulate a test that can be reliably applied to distinguish between inventions that merely use a computer to implement an abstract idea versus those that use a computer to do a new and useful thing?
58 Joseph R. Knight firstname.lastname@example.org www.bakerbotts.com
59 Paul Hash, Shareholder and Litigation Manager – Dallas, Jackson Lewis P.C. Retaliation Update and The Supreme Court’s Objective Test
60 42 U.S.C. § 2000e-3(a) (a)Discrimination for making charges, testifying, assisting, or participating in enforcement proceedings. It shall be an unlawful employment practice for an employer to discriminate against any of his employees or applicants for employment... because he has opposed any practice made an unlawful employment practice by this subchapter, or because he has made a charge, testified, assisted, or participated in any manner in an investigation, proceeding, or hearing under this subchapter. Title VII Retaliation Provision
61 Burlington Northern & Santa Fe Railway Co. v. White: Employees who make Title VII retaliation claims no longer must prove they suffered an "ultimate” or “adverse” employment action (e.g., discharge, demotion, or loss of pay). Title VII prohibits subtle forms of retaliation, which can even include a change in work schedule. Adverse Employment Action
62 The New Standard: –Whether a “reasonable employee would have found the challenged action materially adverse?” SCOTUS encourages a broad reading of Title VII’s anti- retaliation provisions Adverse Employment Action
63 Changing an employee’s position to one with same pay and title, and even more opportunity for advancement — not materially adverse. (Forde v. Donahue) Temporary move from office to cubicle — not materially adverse because temporary move was consistent with office policy. (Roncallo v. Sikorsky Aircraft) Supervisor giving complaining employee nasty looks and “cold shoulder” — not materially adverse. Write-ups and suspensions — materially adverse. (Nugent v. The St. Luke/Roosevelt Hospital Ctr.) What Does “Materially Adverse Action” Mean?
64 UT Southwestern v. Nassar SCOTUS Holding: “But For” Causation –A plaintiff alleging retaliation under Title VII must prove the retaliation was the “but for” cause of the adverse employment action. Reversal of 5 th Circuit: “Motivating Factor” Test –5 th Circuit had held that a plaintiff could prove retaliation claim by showing retaliation was a “motivating factor” for the adverse action. The Current Standard of Proof
65 Thompson v. North American Stainless The employer fired the fiancé of an employee who engaged in protected activity under Title VII. Held: Protection against retaliation under Title VII extends to employees who can demonstrate a close association with the employee who engaged in protected activity. Associational Retaliation
66 Crawford v. Metropolitan Gov’t of Nashville –Employee gained protection by merely responding to general questions pursuant to an internal investigation. Opposition: It Doesn’t Take Much
67 EEOC v. CVC Suit challenging release document as violation of 707(a). Employee gives up right to file charge with EEOC. Section 707(a): prohibits employer conduct that constitutes a pattern or practice of impeding or resisting employee access to EEOC. Reversed earlier position taken in EEOC v. Eastman Kodak (2006). “Pattern and Practice” Retaliation
68 HR/Legal involvement in disciplinary/termination decisions. Managerial training. Release templates should be reviewed. Tips
82 Capital Markets and M&A Environment Current public market activity Current M&A activity 2014 expectations Final thoughts
83 Steven M. Tyndall email@example.com www.bakerbotts.com
84 Patrick Richter, Of Counsel Jackson Lewis P.C. Data Breach: Managing the Fallout
85 Unauthorized use of, or access to, records or data containing personal information. Personal Information (PI) typically includes first name or first initial and last name in combination with: −Social Security Number −Drivers License or State identification number −Account number or credit or debit card number in combination with access or security code −Biometric Information (e.g. NC, NE, IA, WI) −Medical Information What is a Data Breach?
86 Fines, Penalties, Settlements: State Attorney General-Vary By State −Multipliers: Michigan permits civil fines of not more than $250 per failure (each person), with a maximum of $750,000 −Length of notification delay: Florida imposes fines when notification is not provided within 45 days. Calculate the fine as $1,000 per day for the first 30 days, and $50,000 for each 30 day period thereafter with a maximum fine of $500,000 Health and Human Services −Penalties and settlements in the millions of dollars Private Cause of Action 14 states have some form of private action Why Does This Matter?
87 Employment Context Loss, Theft, Improper Access, Inadvertent Disclosure −Laptop −iPhone, Droid, iPad, Tablet, Blackberry −Thumb Drive, Hard Drive −Email Can you identify all the devices containing PI? How Does a Breach Occur?
88 Identify the internal team who will be handling the incident Adhere to existing internal procedures Data Incident Response Plan Document steps taken Notify/Coordinate with insurance carrier Key Action Items
89 Determine whether this is a reportable breach State breach notification statutes and regulations −46 states have a data breach notification requirement −Definitions vary state by state −Residency of the affected individual is key Risk of harm trigger −What is it? How can you make this decision? −Document your decision Employee Relations Concerns? Key Action Items
90 Determine whether credit monitoring services will be offered State laws do not require credit monitoring services in the case of a data breach Protection? (e.g. only names and medical information, but not social security # or financial account #) Peace of mind for affected employees? Company image to state agency investigator Review service agreements with vendors and coordinate notification letters Key Action Items
91 Be prepared for complaints and agency inquiry Complaints with the FTC or the state Attorney General’s office about breach notification or safeguarding information. Consider the following: −Establish a complaint process for responding timely −Review existing data privacy and security policies to ensure compliance −Have rapid-response procedures in place to react to agency inquiry Key Action Items
93 Stephanie F. Cagniart, Associate Baker Botts LLP How the Tail End of the Contract Can Sting Dangerous “Miscellaneous” Terms
94 Boilerplate vs. Design Freedom of Contract vs. Public Policy Overview
95 Your rules, your turf Increasingly favored and enforced Promotes −Predictability −Efficiency −Parties' expectations Make them work together Choice of Law / Forum Clauses
96 Choice of Law: Texas Most significant relationship test Restatement Section 187 Qualified transaction exception
97 Choice of Law: Practice Pointers Which law is most favorable? Conflict-of-laws exclusion Scope −Types of claim −Non-contractual obligations Floating clause Splitting Forum-selection clause
98 Choice of Forum: Texas Presumptively valid Unless… − Unjust and unreasonable − Fraud, overreaching, etc. − Public policy of forum − Seriously inconvenient for trial − Would it deny the party its day in court?
99 Choice of Forum: Practice Pointers Choice-of-Law Convenience / Assets Who is bound Floating Mandatory / Exclusive Federal / state ("in" vs. "of") "Filed in" vs. "filed and litigated in" Conspicuous (<$50,000)
100 Choice of Forum: Enforcement Atlantic Marine Const. Co., Inc. v. U.S. Dist. Ct. for West. Dist. of Tex., 134 S. Ct. 568 (Dec. 3, 2013) "all but the most exceptional cases" 28 U.S.C. § 1404(a) − Public-interest factors only − No weight to plaintiff's choice or private interests − Choice-of-law rules of chosen forum Forum non conveniens (state or foreign)
101 Disclaimer of Reliance Clause Building Walls Around Your Contract Merger / Integration / "Entire Agreement" −Parol evidence rule (+) Disclaimer of Reliance −Fraud protection
102 Disclaimer of Reliance: The Big Three Schlumberger Tech. Corp. v. Swanson, 959 S.W.2d 171 (Tex. 1997) Release (specific) Language −"no promise or agreement which is not herein expressed has been made... none of us is relying upon any statement or representation of any agent of the parties being released hereby. Each of us is relying on his or her own judgment...." Context
103 Disclaimer of Reliance: The Big Three Forest Oil Corp. v. McAllen, 268 S.W.3d 51 (Tex. 2008) Release (broad) Language −"no promise or agreement which is not herein expressed has been made... none of them is relying upon any statement or any representation.... [Plaintiff] is relying on his... own judgment and each has been represented by... legal counsel." Factors
104 Disclaimer of Reliance: The Big Three Italian Cowboy Partners v. Prudential Ins. Co. of Am., 341 S.W.3d 323 (Tex. 2011) Lease Agreement Language −"neither Landlord nor Landlord's agents... have made any representations or promises... except as expressly set forth herein." −"This lease constitutes the entire agreement between the parties hereto with respect to the subject matter hereof." Factors (modified)
105 Disclaimer of Reliance: Practice Pointers Drafting from the Big Three Language − Disclaimer of representations clause − No-reliance clause − Prominently displayed Factors (non-exclusive) − Negotiated − Specific issue − Arm's length − Counsel − "Knowledgeable"
106 Disclaimer of Reliance: Practice Pointers Beyond the Big Three Potential Factors −Beginning vs. End −Non-disclosure −Custom / Usage −Course of Performance Unjustified reliance −Miller Global Prop., LLC v. Marriott Int'l, Inc., 418 S.W.3d 342 (Tex. App.--Dallas 2013) (pet. filed)
107 Amendments Clause If you can make it, you can unmake it! “No Oral Modifications” Intent
108 Amendments: Arbitration at Risk? Unilateral-Amendment Clause and Arbitration: Is the agreement illusory? In re Halliburton, 80 S.W.3d 566 (Tex. 2002) Post-Halliburton approaches
109 Amendments: Practice Pointers Unilateral-Amendment + Arbitration: Drafting options ADR carve-out or Halliburton-type savings clause −Notice and Acceptance −Prospective application −Termination
110 Severability Clause Double-edged sword Saves your contract x Binds you to a bargain you don't want
111 Severability Clause: Practice Pointers Tailoring the clause Blue line vs. reasonableness Savings clause Executor Deletion vs. reformation Economic adjustment clause Identify "essential" terms
112 Stephanie F. Cagniart firstname.lastname@example.org www.bakerbotts.com
113 Kevin Lashus, Office Managing Shareholder, Jackson Lewis P.C. Maggie Murphy, Shareholder, Jackson Lewis P.C. The New I-9: A Brave New World of Compliance and Enforcement
115 Section 1 (Employee Information) Section 1. Employee Information and Attestation (Employees must complete and sign Section 1 of Form I-9 no later than the first day of employment, but not before accepting a job offer.)
116 Section 2 (Documentation) (Employers or their authorized representative must complete and sign Section 2 within 3 business days of the employee’s first day of employment. You must physically examine one document from List A OR examine a combination of one document from List B and one document from List C as listed on the “Lists of Acceptable Documents” on the next page of this form. For each document you review, record the following information: document title, issuing authority, document number, and expiration date, if any.)
119 From FY 2009 through FY2012, ICE conducted about 9,140 administrative I-9 inspections During that time, 1,174 employers received final fine assessments totaling $31.17M (ICE sought $52.72M in assessments) Pew Research Center: an estimated 11.5M unauthorized workers made up an estimated 5.2% of the active workforce in the US DHS OIG: “HSI’s inconsistent implementation of the administrative inspection process.. may have hindered its mission” (Feb. 2014) Latest Developments
120 Battle between compliance and reform advocates Increases in government audit activity, less incentive to negotiate fines, greater oversight over the local offices Growing (liaison) role of ICE at the worksite Discreet information gathering (data-mining) Resolutions to “help” business with mandatory E-Verify (EEVS) What’s Ahead
125 The Impact of the Troll Problem In 2013, NPEs filed 4,800 patent infringement suits −Total number of patent infringement suits = 6,200 −2,700 unique defendant companies RPX estimates total cost of NPE activity in 2013 at $12.8 billion −Includes litigation costs, attorney's fees, and settlements/judgments Source: RPX, 2013 NPE Cost Report
126 The Many Species of Troll Common troll (Example: TracBeam, LLC) −Shell companies and/or plaintiff's attorneys that acquire patents to assert in litigation Bankrupt troll (Example: Williamson (AtHome)) −A practicing entity goes bankrupt and asserts its patents as a means to cover debts / recoup investment Privateer −Practicing entity spins off IP holdings into a troll Supertroll (Example: Acacia) −NPE with hundreds of individual portfolios Megatroll (Example: Intellectual Ventures) −NPE with thousands of patents in a giant portfolio and significant financial backing
128 Current Status of Patent Legislation America Invents Act −Signed into law September 16, 2011 House Bill H.R. 3309 ("Innovation Act") −Passed on December 5, 2013 Senate Bill ("Patent Transparency and Improvements Act of 2013") −Currently in Judiciary Committee −Introduced by Sen. Leahy −On April 18, Sens. Schumer and Cornyn proposed an amendment incorporating various concepts from the House bill
129 Some anti-troll provisions in the legislation Strict requirements on demand letters Heightened pleading standard Identifying real parties in interest Joinder reform, and its effect on transfer Customer stay Discovery limits and cost-shifting Fee-shifting
130 Demand Letters and Pre-suit Investigation House: demand letter cannot be used as evidence of willful infringement unless it includes detailed information about patent, patent owner, and infringement theory Senate: −Same willful infringement limits as House Bill −Inadequate demand letter → suit may not proceed −Limited to NPEs and customer suits −Does not apply to communications re: existing license agreements Notes −Frivolous demand letters can be ignored? −Greater incentive to sue without pre-suit notice
131 Pleading Specificity House & Senate bills both eliminate Form 18 and require heightened specificity in pleading, including: −Identification of each asserted patent, each asserted claim, each accused product (name or model number) −Element-by-element infringement theory -- Claim charts? −Indirect infringement - description of underlying direct infringement −Standing, jurisdiction, list of other complaints asserting the patents −Whether the patents are SSO-essential or subject to government licensing requirements Possible escape clause? −Information "not readily accessible" can be plead generally, along with description of efforts made to obtain required information
132 Identification of Real Party in Interest House −Complaint must disclose: assignee; entities with right to sublicense; ultimate parent; and any entity with a financial interest −Must be disclosed to PTO, court, and adverse party −Ongoing duty of disclosure to the PTO Senate −Same as the House, except no requirement to disclose to the PTO upon filing a complaint
133 Improper Joinder Under the AIA, plaintiffs may no longer join multiple unrelated defendants −35 U.S.C. § 299 In theory, new joinder law should make transfer easier −Transfer analysis on case-by-case basis, not net convenience across all related cases −But plaintiff's ties to district, judicial economy, and court's prior familiarity may still be enough
134 Stay of Actions against Customers House and Senate bills would both stay actions against customers if: −Manufacturer is party to an action involving the same patent −Customer agrees to be bound by res judicata −Manufacturer and customer consent in writing −Motion filed timely −Later of 120 days after service of complaint or entry of the first scheduling order Notes −Will it backfire? −Could incentivize plaintiffs to sue customers and ignore manufacturers, or wait to sue manufacturers later −Can the manufacturer file the motion to stay?
135 Stay of Action Pending IPR or CBM Stay pending inter partes review −Analysis same as in reexamination AIA includes specific requirements regarding stay pending review of covered business method patent −Court must consider specific factors −Moving party has right to immediate interlocutory appeal of denial −VirtualAgility v. Salesforce (ED Tex, 2014)
136 Discovery Limitations: Pre-Markman Stay House −If claim construction is required, discovery shall be limited to only information necessary for claim construction until after a Markman order −Exceptions: when necessary to ensure timely resolution, when necessary to resolve a motion, when denial would be a manifest injustice, when necessary for actions seeking relief based on competitive harm Senate similar to House, except: −Only applies to NPE plaintiffs −No exception for timely resolution Notes −Only applies if court determines claim construction is necessary. −Return to the days of eve of trial claim constructions?
137 Discovery Limitations: Core Documents and Cost-Sharing House −Rule-making responsibility assigned to Judicial Conference −Suggested rules: −Core document discovery −Electronic communication (specificity; limits; cost-shifting beyond limits) −Additional documents (cost-shifting / fee-shifting; bond; limits) Senate −Similar to House, but suggestions are not as loaded
138 Fee Shifting House: reasonable fees and expenses to prevailing party −…unless the position and conduct of the nonprevailing party was reasonably justified or special circumstances exist to make an award unjust −Bill as introduced set standard at "substantially justified" −Unilateral covenant not to sue = non-prevailing −Interested parties may be joined to pay the fees Senate: Same as House, but standard is whether nonprevailing party was objectively reasonable
139 In the Meantime… Lower Bar for § 285 Fee Awards 35 U.S.C. § 285 authorizes attorneys fees in "exceptional cases" The Supreme Court recently broadened the district court's discretion for § 285 awards −"Exceptional case" = "simply a case that stands out from others" −Awards are now reviewed for abuse of discretion −Highmark Inc. v. Allcare Health Mgmt. Sys., Inc. (April 29, 2014) −Octane Fitness, LLC v. Icon Health & Fitness, Inc. (April 29, 2014)
140 Defense Strategies "Consistent Porcupine" "Play the man, not the hand" "Pay the man" Insurance-like mechanisms
142 Nick Schuneman email@example.com www.bakerbotts.com
143 Sujata Ajmera, Associate, Jackson Lewis P.C. Julie Tower, Associate, Jackson Lewis P.C. Tips from the Trenches
144 1.Using Trayvon Martin look-a-likes for target practice isn’t a good idea. Port Canaveral, Florida (April 2013) 2.If you don’t tell employees that it is inappropriate to lick someone’s face, how else are they supposed to know? Jackson v. City of San Diego (2013) Tips from the Trenches: 1 and 2
145 3.In case you were wondering, this is not how you respond to a wage and hour complaint. Lolange v. Z-Two Diner New York (July 2013) Tips from the Trenches: 3
146 4.Note to supervisors – if an employee is pranked with a “kick me” sign…don’t actually kick him. Palacio v. Intel Corp, Albuquerque, New Mexico (May 2013). Tips from the Trenches: 4
147 5.You may have an obligation to provide a reasonable accommodation…but giving a legally blind work a power saw may not end up well. Theis v. Oklahoma League for the Blind, Oklahoma City, OK (May 2013) Tips from the Trenches: 5
148 6.You can’t fire employees who refuse to have “staring contests” or “scream at ashtrays.” EEOC v. Dynamic Medical Services, Southern District Florida (2013) 7.But you probably can fire someone for being a “brony.” Reddit.com (September 2013) Tips from the Trenches: 6 and 7
149 8.Employees take these words seriously. Miami, Florida (December 2013) Tips from the Trenches: 8
150 9.Asking your paralegal to join your polygamous union as a “third wife” probably isn’t the advancement opportunity she was looking for. Rafi v. Ray, S.D.N.Y. (2013) Tips from the Trenches: 9
151 10.Just because she looks like a lady…doesn’t mean “she” wants to be called one. Valeria Jones v. Bon Appetit Management, Oregon (February 2014) Tips from the Trenches: 10
152 11.Be sure to read the fine print. Allen v. Chanel, Inc., S.D.N.Y. (2013) 12.Don’t forget to check Facebook. Gulliver Schools, Inc. v. Snay, Florida App. Ct. (2014) Tips from the Trenches: 11 and 12
153 Kevin Meek, Partner Baker Botts LLP DISCLAIMER: I am not an ethics expert, nor do I want to be. Ethics and The Modern Attorney- Client Relationship
154 Lawyers = Kindergarteners In a 20 case before Judge Sparks the lawyers were invited to a "kindergarten party." The party will feature many exciting and informative lessons, including: How to telephone and communicate with a lawyer; How to enter into reasonable agreements about deposition dates... and; An advanced seminar on not wasting the time of a busy federal judge and his staff.... Morris v. Coker, No. A-11-MC-712-SS (W.D. Tex. Aug. 26, 2011).
155 "All I really need to know I learned in kindergarten." -- Roger Fulghum Share everything. Play fair. Don't hit people. Put things back where you found them. Clean up your own mess. Don't take things that aren't yours. Say you're sorry when you hurt somebody. Wash your hands before you eat. Flush. Warm cookies and milk are good for you. Live a balanced life - learn some and think some and draw some and paint and sing and dance and play and work every day some. Take a nap every afternoon. When you go out into the world, watch out for traffic, hold hands and stick together. Be aware of wonder.
156 Share everything. ABA Model Rule 3.3 Texas Disciplinary Rule of Professional Conduct 3.03 A lawyer shall not "knowingly": make "a false statement of fact or law" or fail to "correct a false statement of material fact or law previously made," fail to disclose controlling legal authority that is directly adverse and not disclosed by opposing counsel, offer false evidence or fail to take remedial measures where the lawyer later learns of its falsity.
158 Play fair. ABA Model Rule 3.4--Fairness to opposing party and counsel A lawyer shall not: unlawfully obstruct another party's access to evidence or unlawfully alter, destroy, or conceal a document or other material having potential evidentiary value; falsify evidence, counsel / assist a witness to testify falsely, or offer an unlawful inducement to a witness; knowingly disobey an obligation under the rules of the tribunal; make frivolous discovery requests or fail to make reasonably diligent efforts to comply with a legally proper discovery request; and in trial −allude to any matter in trial that the lawyer does not reasonably believe is relevant or that will not be supported by admissible evidence; −state a personal opinion as to the justness of a cause, the credibility of a witness, the culpability of a civil litigant, or the guilt or innocence of an accused.
159 Play fair. Texas Disciplinary Rule of Professional Conduct 3.04 ABA Model Rule 3.4 + A lawyer shall not, in trial: habitually violate an established rule of procedure or evidence; and engage in conduct intended to disrupt the proceedings.
160 Play fair. "Would it be a violation of the Canons of Ethics for an attorney to file with the trial judge a brief covering the principal points involved in a pending action without furnishing a copy to opposing counsel?" OF COURSE IT WOULD!! See Texas Ethics Opinion 88, 18 Baylor L. Rev. 232 (1966)
161 Play fair. Don't try to establish personal jurisdiction over the defendant based on a single purchase of the defendant's products in the forum state, especially if you were the purchaser. Plaintiff's counsel asserted that jurisdiction was proper based on a single purchase order for the "sale of two hundred of the alleged infringing products" in the forum state. The court criticized the plaintiff's lack of candor, noting that the one purchase order on which plaintiff exclusively relied was "made at the behest of [plaintiffs]." See Edberg v. Neogen, 17 F.Supp.2d 104 (D. Conn. 1998).
162 Don't hit people. In a letter to a British lawyer regarding a divorce proceeding, the author (a Texas lawyer) included the following paragraph: At this time, it looks that we are going to furnish your little country with a lot more American dollars, and I suppose in time our boys will be returning to fight your battles with American dollars and weapons as in the last two wars; however, we are a free democratic people and believe in helping the weak nations. We go where we please and do just about as we desire. The Ethics Committee had the following thoughts: The committee deeply deplores the gratuitous insult contained in such last paragraph. We... feel that it may possibly call for action by a grievance committee. See Texas Ethics Opinion 20, 18 Baylor L. Rev. 204 (1966).
164 Put things back where you found them. ABA Model Rule 3.4(a) Texas Disciplinary Rule of Professional Conduct 3.04(a) "A lawyer shall not unlawfully obstruct another party's access to evidence."
165 Put things back where you found them. Don't tamper with the evidence--produce what should be produced in a timely manner. In a patent infringement suit, defendants' counsel initially claimed that source code and other reports were either lost or destroyed. Although the documents were eventually produced, the court was not pleased. See Keithley v. HomeStore.com, Inc., 2008 WL 3833384, at *1 (N.D. Cal. Aug. 12, 2008).
166 Clean up your own mess. If you screw up, correct the mistake instead of covering it up. The plaintiff in a patent infringement suit filed a motion to strike defendant's pleadings based on the failure of defense counsel to respond to discovery requests. Defense counsel claimed that he had sent the plaintiff's counsel an e-mail regarding the discovery requests, but the plaintiff claimed this e-mail was never received. Furminator, Inc. v. Petvac Group LLC, Case No. 2-08-cv-338-TJW (E.D. Tex. Aug. 5, 2011).
167 Clean up your own mess. And if you don't clean up your mess before anyone finds out, the rest of us will have to report your bad behavior. ABA Model Rule 8.3 and Texas Disciplinary Rule of Professional Conduct 8.03 With some narrow exceptions, "a lawyer having knowledge that another lawyer has committed a violation of applicable rules of professional conduct that raises a substantial question as to that lawyers honesty, trustworthiness or fitness as a lawyer in other respects, shall inform the appropriate disciplinary authority."
168 Don't take things that aren't yours. ABA Model Rule 1.15 Texas Disciplinary Rule of Professional Conduct 1.14 A lawyer shall hold property of clients or third persons... separate from the lawyer's own property. Upon receiving funds or other property in which a client or third person has an interest, a lawyer shall promptly notify the client or third person. Except as stated in this rule or otherwise permitted by law or by agreement with the client, a lawyer shall promptly deliver to the client or third person any funds or other property that the client or third person is entitled to receive....
169 Don't take things that aren't yours. This includes your client's spouse. According to the South Carolina Supreme Court: Sexual involvement with the spouse of a current client, while not expressly prohibited by the language of our Rules of Professional Conduct,... is a per se violation of [the Rules of Professional Conduct], as it creates the significant risk that the representation of the client will be limited by the personal interests of the attorney. http://www.abajournal.com/news/article/sex_with_clients_spouse_i s_a_per_se_legal_ethics_violation_top_s.c._court_s/
170 Wash your hands before you eat. ABA Model Rule 1.9 Texas Disciplinary Rule of Professional Conduct 1.09(a)(3) A lawyer who has formerly represented a client in a matter shall not thereafter represent another person in the same or a substantially related matter in which that person's interests are materially adverse to the interests of the former client unless the former client gives informed consent, confirmed in writing.
171 Wash your hands before you eat. Conflicts arising from joint defense agreements 5th Circuit: Analyzes the issue as one of contract and confidentiality rather than conflict. Non-clients, by definition cannot rely upon rules imputing knowledge among members of a firm because those rules apply to clients only. See Wilson P. Abraham Constr. Corp. v. Armco Steel Corp., 559 F.2d 250 (5th Cir. 1997) (per curiam).
172 Wash your hands before you eat. Conflicts arising from joint defense agreements Texas courts: Every lawyer in a firm is irrebutably presumed to be disqualified from representing a party adverse to a former co-defendant of a client. See Nat'l Med. Enterprises v. Godbey, 924 S.W.2d 123 (Tex. 1996).
173 Wash your hands before you eat. Conflicts arising from joint defense agreements Federal Circuit: AMD and Nintendo were parties to a Joint Defense Agreement ("JDA"), which provided: "Nothing contained in this Agreement has the effect of transforming outside or inside counsel for either party into counsel for the other party.... The parties expressly acknowledge and agree that nothing in this Agreement... shall be used as a basis to seek to disqualify the respective counsel of such party in any future litigation." AMD's former in-house counsel later represented SMG against Nintendo, who moved to disqualify his entire firm.
174 Wash your hands before you eat. Conflicts arising from joint defense agreements Federal Circuit (Cont'd) The district court granted Nintendo's motion, concluding that the JDA's waiver provision did not apply to an in-house lawyer who was no longer employed by a party to the agreement. On petition for a writ of mandamus, the Federal Circuit ordered the district court to vacate its disqualification order.
175 Wash your hands before you eat. Conflicts arising from joint defense agreements Federal Circuit (Cont'd) The Federal Circuit stated: "[T]he Agreement's terms clearly point away from the district court's conclusion.... Nintendo agreed not to seek disqualification of then 'respective counsel of such party [i.e., AMD] in any future litigation.' [The attorney in question] was indisputably a 'respective counsel' of AMD, and, contrary to Nintendo's objections, the breadth and temporal scope of the waiver are broad enough to include 'any future litigation' between Nintendo and a party employing, or represented by, [the attorney in question]." In re Shared Memory Graphics, 659 F.3d 1336 (Fed. Cir. 2011)
177 Flush. ABA Model Rule 1.5 Upon termination of representation, a lawyer shall take steps to the extent reasonably practicable to protect a client's interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payments of fee that has not been earned. The lawyer may retain papers relating to the client to the extent permitted by other law only if such retention will not prejudice the client in the subject matter of the representation.
178 Flush. Texas Ethics Opinion 570 A former client has demanded to see the lawyer's file on the representation of the client. The lawyer previously provided a copy of the majority of the documents contained in the file, but withheld copies of the lawyer's notes. "A lawyer's ethical obligations may vary depending on the type, source, or content of the document and other relevant factors." Regarding the lawyer's notes, "the attorney is the agent of the client, and the work product generated by the attorney in representing the client belongs to the client."
179 Take a nap every afternoon. But not in court... The 5th Circuit granted a new trial to an inmate whose lawyer consistently slept during the trial, noting the "fundamental unfairness in [the inmate's] capital murder trial created by the consistent unconsciousness of his counsel." Burdine v. Johnson, 262 F.3d 336 (5th Cir. 2001).
180 When you go out in the world, watch out for traffic, hold hands, and stick together.
181 Kevin J. Meek firstname.lastname@example.org www.bakerbotts.com